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Trademarks and Service Marks: What Qualifies? How Do I File for One?

May 26, 2010

By Scott Allen, Entrepreneurs May 2010

What is a trademark?

Simply put, it’s a brand name. More formally, it’s “a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.” (USPTO) A service mark identifies a service rather than a product.

Trademark protection only applies to a particular category of goods or services, although a single trademark owner may use it in multiple categories. For example, Nike Inc. owns the mark on a variety of shoes, clothing, sporting goods, etc., but Sweden’s Nike Corporation could not prevent their use of the name because Nike Corporation’s trademark was for heavy machinery, including hydraulic lifting jacks, pistons and presses.

What can be trademarked?

Trademark registration can be granted on distinctive names, logos and slogans. Marks may be inherently distinctive because they are original and unique, or may become a strong mark over time or as a result of a marketing campaign. Inherently distinctive marks may be:

  • suggestive or evocative marks – made-up words that suggest or evoke qualities of the
           product or service (Slim-Fast, Expedia)
  • coined or fanciful marks – arbitrary made-up words (Exxon, Kleenex, Viagra)
  • arbitrary marks – words that are surprising or unexpected in the context of their use
           (Sprite soft drink, Amazon online bookstore)
  • unique logos or symbols – distinctive typography or artwork (McDonald’s golden
           arches, the Playboy bunny, IBM’s logo)

Marks that describe a feature of the product, or that are based upon a person’s name or geographical location, are generally unprotectable. However, once the owner can demonstrate public awareness of the mark through advertising, product sales or other means, then it develops a “secondary meaning” and may be registered. Examples include:

  • people’s names (Ben & Jerry’s, Calvin Klein, Procter & Gamble)
  • geographic terms (Bank of America, New York Life)
  • words that describe the product or service – (Burger King, Jiffy Lube)
  • slogans – “Just do it” (Nike), “We do chicken right” (KFC), “Quality is job 1” (Ford)

What is non-trademarkable?
Several types of terms are not protected under copyright law and can not be registered:

  • marks confusingly similar to existing marks – A mark is not subject to protection if it is too similar in spelling, sound or appearance and is used for similar goods or services (a new sportswear company could not call itself Nike).
  • generic terms – A mark cannot be protected if it is simply the name of the goods themselves (a soft drink called Pop).
  • weak marks that have not achieved secondary meaning – The owner must demonstrate that the public recognizes the mark as unique to their product (Joe’s Bar would not qualify).
  • abandoned trademarks – If the mark is no longer in use and the owner has indicated intent not to resume use, it is not protected.
  • functional features – A functional element of a product or its packaging, as opposed to a decorative element. Note that this may be protectable under a design patent.
  • titles of literary or artistic works – Titles of books, movies and music cannot generally be trademarked (or copyrighted). It can be if it is used to brand a series of books (Chicken Soup for the Soul), or related products (Star Wars toys).

Do I have to register my trademark?
Your right to use the name is protected the moment you first use it publicly. Your right to prevent others in your line of business from using it starts the moment you first claim it as a trademark (TM) or service mark (SM), and you do not have to register in order to use those designations. However, registering has several advantages, including:

  • public notice of your claim of ownership
  • ability to bring action in federal court
  • legal presumption of ownership and exclusive right of use
  • basis for registration in other countries
  • preventing the import of infringing foreign goods

Do I need a lawyer?
You do not have to have a lawyer to file in the U.S., although it certainly increases your chances of a successful filing. A trademark attorney will check that you have all the necessary records in the proper format, that your mark qualifies for protection, and perform a thorough trademark search. You can do these yourself, but an experienced attorney will likely be able to do it much faster and more reliably.

How do I obtain a trademark?
Procedures vary from country to country, but in the U.S., you can file via mail or online at the USPTO Web site. Registration costs between $275 and $375. The initial application primarily includes a representation of the mark and a description of the goods or services. You should have already performed a search to be sure your mark is unique for the category for which you are registering. As part of the approval process, you may be required to demonstrate your first use of the mark, so you will want to prepare records of things like a DBA filing, bank statements in the company name, or advertisements in printed publications.

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